WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Brands Sàrl v. Registration Private, Domains By Proxy, LLC / Gabriel Guzman Sanchez, Hosting Titan, S.A. de C.V.
Case No. D2019-2335
1. The Parties
The Complainant is Philip Morris Brands Sàrl, Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Gabriel Guzman Sanchez, Hosting Titan, S.A. de C.V., Mexico.
2. The Domain Name and Registrar
The Disputed Domain Name <pmi-mx.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2019. On September 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 27, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 1, 2019 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on October 3, 2019.
The Center verified that the Complaint and the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 31, 2019.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on November 11, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant Philip Morris Brands SàrI is a company which is part of the group of companies affiliated to Philip Morris International Inc. (jointly referred to as “PMI”) , which is one of the leading international tobacco companies operating in approximately 180 countries.
The Complainant is the owner of a large portfolio of trademark registrations around the world. In particular, the Complainant is the owner of the following trademarks:
- PMI International Registration No. 956639, registered on February 7, 2008;
- PHILIP MORRIS Mexican trademark Registration No. 263494, registered on July 27, 1981; and
- PHILIP MORRIS United Kingdom trademark Registration No. 00000584669, registered on April 2, 1938.
The Disputed Domain Name <pmi-mx.com> was registered on August 20, 2019. The Disputed Domain Name is currently inactive. However, the Complainant presented evidence where the Disputed Domain Name was linked to a website in Spanish, pretending to be an official PMI website operated by a PMI subsidiary. In addition, the Disputed Domain Name included a section “Vehicle Auction” where pre-owned vehicles were offered for sale.
Furthermore, the Disputed Domain Name appears to have been used in connection with a fraudulent email scheme.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows:
Identical or confusingly similar
The Complainant states that the Disputed Domain Name is confusingly y similar to PMI trademark registrations. The addition of the generic country code “mx” is insufficient in itself to avoid a finding of confusing similarity.
The Complainant further submits that the country code “mx” is merely indicating that the Disputed Domain Name is related to a Mexican affiliate of the Complainant.
Rights or legitimate interests
The Complainant alleges that the Respondent lacks rights and legitimate interests in the Disputed Domain Name. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register the Disputed Domain Name incorporating its PMI trademark.
The Complainant further states that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. Since the Respondent is not an authorized licensee of the PMI trademarks and the Disputed Domain Name is being used as part of a fraudulent scheme.
Finally, the Complainant submits that the use of the Disputed Domain Name for fraudulent purposes cannot establish a legitimate interest on behalf of the Respondent.
Registration and use in bad faith
The Complainant submits that the Respondent knew of the Complainant’s PMI trademark when registering the Disputed Domain Name.
Finally, the Complainant further submits that the Respondent used and registered the Disputed Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name at issue in this case:
(i) The Disputed Domain Names is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Disputed Domain Name <pmi-mx.com> is confusingly similar to the Complaint’s PMI trademark. The Disputed Domain Name wholly incorporates the Complainant’s PMI trademark.
Finally, neither the generic Top-Level Domain (“gTLD”) “.com” nor the term “mx” are of any significance to the present assessment of confusing similarity.
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) Before any notice to you of the dispute, your use of, demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademark. The Complainant has prior rights in the trademark which precede the Respondent’s registration of the Disputed Domain Name.
The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name or that the Disputed Domain Name is used in connection with a bona fide offering of goods and services.
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s contentions.
As such the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Disputed Domain Name was registered in 2019 while the Complainant’s PMI International Registration No. 956639 was registered in 2008. This is, the Disputed Domain Name was registered eleven years after the Complainant registered its PMI trademark. The fact that the Respondent in the Disputed Domain Name’s website pretends to be the Complainant, clearly demonstrates that the Respondent was aware of the Complainant’s and its products when registering the Disputed Domain Name.
In addition, the Respondent used the Disputed Domain Name as a part of a fraudulent scheme, tricking consumers by pretending to be the Mexican affiliate of the Complainant and offering vehicles for sale. This conduct demonstrates the Respondent’s bad faith.
The circumstances in the case before the Panel indicate that the Respondent was aware of the Complainant’s trademarks when registering the Disputed Domain Name and it has created a likelihood of confusion with the Complaint’s trademarks and website in order to attract Internet users for its own commercial gain.
In addition, the fact that the Respondent used a privacy registration service in order to hide its real identity enhances the bad faith of the Respondent (See WIPO Case No. D2006-0696, Fifth Third Bancorp v. Secure Whois Information Service).
Due to this conduct, the Panel understands that the Respondent intentionally created a likelihood of confusion with the Complainant’s trademarks and website in order to attract Internet users for its own commercial gain, as required by paragraph 4(b)(iv) of the Policy.
Therefore, taking all circumstances into account and for all of the above reasons, the Panel concludes that the Respondent has registered and used the Disputed Domain Name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <pmi-mx.com> be transferred to the Complainant.
Pablo A. Palazzi
Date: November 23, 2019